Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-2, 7-14, 21 and 26-33 are pending in this application.
Response to Amendment
2. Applicant’s amendment filed 05/27/2026 in response to the previous Office Action (03/10/2026) is acknowledged. Rejection of claims 1, 21 and 26-27 under 35 U.S.C. 112(b) (item 4a) has been obviated. Rejection of claim 21 under 35 U.S.C. 112(b) (item 4b) has been maintained.
Election/Restrictions
3. Applicant’s election without traverse of Group II in the reply filed on 02/03/2026 is acknowledged. To expedite prosecution, the examiner recommends that applicants delete claim 2 that is drawn to non-elected invention of Group I. The examiner will rejoin Group III (method claims) after applicants overcome the second paragraph rejection raised below.
Claim Rejections - 35 USC § 112
4. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
5. Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In claim 21, the phrase, “for use ....” is indefinite. Literally, it simply states an intention, which is a mental state, not a patentable limitation. Hence the claim is improperly dependent, as it does not further limit the claim on which it depends. That is how the claim has been examined. Alternatively, this may be intended as a method of use claim, in which case, the claim would be garbled, as it begins as a pharmaceutical composition claim, and ends as a method claim. Moreover, as it does not contain any actual step, it would not be a proper process claim. The intended scope of the claim is thus unclear.
Response to arguments
Applicant’s argument filed 05/27/2026 has been fully considered but it is not persuasive.
Applicants amended the claim from “A compound of claim 7 for use” to “A pharmaceutical composition comprising compound of claim 7 and a carrier for use”, but said amendment did not solve the problem. “For use” is a mental step whether it is in a compound or in a pharmaceutical composition claim. It is recommended that applicants delete “for use” in the claim and replace it with a pharmaceutical composition that recites additional ingredients such as anti-epileptic, muscle relaxing, etc. Alternatively, applicants can delete claim 21 to overcome this rejection. Note that the method of eliciting one or more of anti-epileptic, muscle relaxing, etc. is recited in withdrawn claim 28.
Allowable Subject Matter
6. Claims 1, 7-8 and 26-27 are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Kahsay Habte/
Primary Examiner, Art Unit 1624
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